UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
`
`
`
`MEXICHEM AMANCO HOLDINGS S.A. de C.V.,
`Petitioner
`
`v.
`
`HONEYWELL INTERNATIONAL INC.
`Patent Owner
`
`_________________
`
`Case IPR2013-00576
`Patent 8,444,874
`
`____________________________________
`
`PATENT OWNER’S RESPONSE
`UNDER 37 C.F.R. § 42.210
`
`Page 1 of 66
`
`Arkema Exhibit 1070
`
`

`
`
`
`
`TABLE OF CONTENTS
`
`
`Technology Background ............................................................................. 4 
`I. 
`Introduction and Overview ........................................................................ 5 
`II. 
`Introduction to Claimed Methods, Cited Documents, and Arguments ... 5 
`A. 
`Specific Board Positions for Rebuttal ........................................................ 8 
`B. 
`III.  Petitioner’s Burden of Proof .................................................................... 11 
`IV.  Claim Construction ................................................................................... 12 
`V.  Combination of Inagaki, Konzo, and Bivens ........................................... 15 
`A.  Legal Standard for Obviousness....................................................... 15 
`B.  Overview ............................................................................................ 17 
`C.  Facial Deficiencies of Cited Documents as to Claims ...................... 18 
`1. 
`Inagaki ................................................................................... 18 
`2. 
`Konzo ..................................................................................... 22 
`3. 
`Bivens..................................................................................... 22 
`D.  Combination of Documents does not Render Obvious Claims
`1-15 .................................................................................................. 27 
`1. 
`Combination fails to Teach or Suggest Claims 1 and
`12 ............................................................................................ 27 
`Combination fails to Teach or Suggest Claims 5 and
`9-11. ....................................................................................... 46 
`Combination Fails to Teach or Suggest Claims 8 and
`15 ............................................................................................ 49 
`Combination Fails to Teach or Suggest Claim 2 ................. 54 
`4. 
`Combination Fails to Teach or Suggest Claim 11 ............... 56 
`5. 
`Dependent Claims 3, 4, 6, 7, 10, 13, 14 ................................. 57 
`6. 
`VI.  Conclusion ................................................................................................. 58 
`
`
`2. 
`
`3. 
`
`
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`-i-
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`Page 2 of 66
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`EXHIBIT LIST
`
`
`Previously Filed
`
`Ex. 1001
`
`U.S. 8,444,874 (“the ’874 patent”)
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1008
`
`Ex. 2001
`
`Inagaki et al., JP-04-110388 (Translation) (”Inagaki”)
`
`Konzo et al. “Winter Air Conditioning,” (The Industrial Press
`
`1958) pp 590-596 (“Konzo”)
`
`Bivens et al., U.S. 6,783,691 (“Bivens”)
`
`Declaration of Stuart Corr (“Corr Decl.”)
`
`Higashi, Y. and Tanaka, K., “Critical Parameters and Saturated
`
`Densities
`
`in
`
`the Critical Region
`
`for
`
`trans-1,3,3,3-
`
`Tetrafluoropropene (HFO-1234ze(E)), J. Chem. Eng. Data,
`
`2010, 55, 1594-1597
`
`Filed Herewith
`
`
`Exhibit 2002 SIRAC Meeting presentation titled 4th Generation Refrigerants:
`Mexichem Overview, dated November 21, 2012
`
`Exhibit 2003 Handbook of Industrial Hydrocarbon Processes by James G.
`Speight PhD, DSc, copyright 2011
`
`Exhibit 2004 McLinden and Didion, “Quest for Alternatives: A Molecular
`Approach Demonstrates Tradeoffs and Limitations are Inevitable
`
`
`
`-ii-
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`Page 3 of 66
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`

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`in Seeking Refrigerants”
`
`Exhibit 2005 White Paper, “Consideration of Hydrofluoroolefins (HFOs) as
`Potential Candidate Medical Propellants”
`
`Exhibit 2006 Publication titled Beyond CFCs: Extending the Search for New
`Refrigerants by William L. Kopko
`
`Exhibit 2007 NASA Contract No. NAS7-918 Technical Support Package on
`Nearly Azeotropic Mixtures to Replace Refrigerant 12 for August
`1992 – NASA Tech Brief Volume 16, No. 8, Item #122 from JPL
`New Technology Report
`
`Exhibit 2008 U.S. Patent No. 5,001,287 to Ferandez et al.
`
`Exhibit 2009 EFCTC Fact Sheet 19, “Hydrofluoroolefins (HFOs)”
`
`Exhibit 2010 EFCTC Web site document: Fluorobcarbons and Sulphur
`Hexafluoride Products and Main Applications Major HFC –
`HCFC – PFC – SF6 – HFO molecules
`
`Exhibit 2011 U.S. Patent Publication No. 2012/0292556 to Van Horn
`
`Exhibit 2012 Purdue Paper, “Proceedings of the 1992 International
`Refrigeration Conference – Energy Efficiency and New
`Refrigerants”
`
`Exhibit 2013 U.S. Patent No. 6,245,254 to Corr
`
`Exhibit 2014 Purdue 2012 Publication, “Investigation of Low GWP
`
`
`
`-iii-
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`Page 4 of 66
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`

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`Refrigerant Interaction with Various Lubricant Candidates”
`
`Exhibit 2015 Non-Patent Publications listed in Dr. Corr’s Curriculum Vitae
`
`Exhibit 2016 U.S. Patent Publication No. 2002/0007640 to Corr et al.
`
`Exhibit 2017 Overview of SAE Cooperative Research Program CRP150 for
`Alternative Refrigerants
`
`Exhibit 2018 U.S. Patent No. 7,084,315 to Corr et al.
`
`Exhibit 2019 Amendment A filed in USPTO for U.S. Patent Application No.
`12/287,880 for Heat Transfer Compositions (Low)
`
`Exhibit 2020 Deposition of Stuart Corr taken on April 24, 2014 (non-
`confidential version)
`
`Exhibit 2021 Thomas Curriculum Vitae
`
`Exhibit 2022 Pate 1993 Report, “Miscibility of Lubricants with Refrigerants”
`
`Exhibit 2023 U.S. Patent No. 5,366,646 to Sato et al.
`
`Exhibit 2024 Purposefully left blank
`
`Exhibit 2025 U.S. Patent No. 6,962,665 to Mahler
`
`Exhibit 2026 White Paper, “When Do Sythetic Lubricants Make Sense?”
`
`Exhibit 2027 Bivens Curriculum Vitae
`
`
`
`-iv-
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`

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`Exhibit 2028 AHRI Publication, “Past Programs”
`
`Exhibit 2029 Kopko Publication, “Beyond CFCs: Extending the Search for
`New Refrigerants” from the Proceedings of ASHRAE’s 1989
`CFC Technology Conference
`
`Exhibit 2030 U.S. Patent Publication No. 2011/0312101 to Tsuchiya et al.
`
`Exhibit 2031 ARI 2006 Standard 700
`
`Exhibit 2032 Chemical & Engineering News, July 23, 2008
`
`Exhibit 2033 Bogdan, Williams, Logsdon, Parker Publication, “Status Report
`on the Development of HFC-245fa as a Blowing Agent”
`
`Exhibit 2034 Allied Signal Status Report on the Development of HFC-245fa as
`a Blowing Agent
`
`Exhibit 2035 Japanese Article, "Automotive Engineering Series, Automotive
`Air-Conditioning”
`
`Exhibit 2036
`
`Invalidation Trial No. 2011-800092, Japanese Patent No.
`4699758, Partial English Translation of Japanese Article,
`"Automotive Engineering Series, Automotive Air-Conditioning”
`
`Exhibit 2037 Signature Page and Errata Sheet for Deposition of Stuart Corr
`taken on April 24, 2014
`
`Exhibit 2038
`
` Purposefully left blank
`
`
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`-v-
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`Exhibit 2039
`
`IOR Guidance Note 18, “Refrigerant Selection and System
`Design – the role of HFCs”
`
`Exhibit 2040 Bivens Declaration
`
`Exhibit 2041 Shankland Declaration
`
`Exhibit 2042 Thomas Declaration
`
`
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`-vi-
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`PATENT OWNER RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`Patent Owner Honeywell International Inc. (“Patent Owner”) hereby
`
`respectfully submits this Response to the Petition by Mexichem Amanco Holdings
`
`S.A. de C.V. (“Petitioner”) seeking inter partes review, as to the grounds for which
`
`a trial was granted in the decision instituting the inter partes review (“Institution
`
`Decision”) dated February 27, 2014.
`
` Central to Petitioner’s theory is its allegation that a person of ordinary skill
`
`at the time of Patent Owner’s invention would have expected the hydrofluoroolefin
`
`(“HFO”) of the invention (trans-1,3,3,3-tetrafluoropropene) – an unsaturated
`
`compound characterized by a carbon-carbon double bond – to behave the same as
`
`the saturated compounds disclosed in other prior art, even though none of the prior
`
`art identified any unsaturated compound, let alone trans-1,3,3,3-tetrafluoropropene,
`
`for use according to the invention. The Board accepted Petitioner’s position as
`
`true based on the evidence of record at the time, primarily a declaration of Stuart
`
`Corr, a highly skilled employee of Mexichem, leaving the ultimate determination
`
`of the sufficiency of the evidence on this central point for trial.
`
`Patent Owner now sets forth below the extensive contemporaneous evidence
`
`contradicting Petitioner’s position and showing that the unsaturated compound
`
`disclosed and claimed in U.S. 8,444,874 (“the ‘874 patent”) could not have been
`
`predicted to create a workable refrigerant and lubricant combination with the same
`
`
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`-1-
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`Page 8 of 66
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`POEs that are disclosed with saturated compounds in the prior art Bivens patent
`
`principally relied on by Petitioner. This extensive evidence includes patents and
`
`publications from Petitioner’s employees and others as well as the Declarations of
`
`Dr. Bivens, Dr. Shankland and Dr. Thomas.
`
`Moreover, since submitting his declaration in support of the Petition, Dr.
`
`Corr has now testified both that the characteristics important to use of these
`
`compounds as refrigerants are unpredictable and that the differences between
`
`saturated and unsaturated compounds have a significant impact on these
`
`characteristics. In addition, Dr. Corr admitted numerous details in his deposition
`
`that support the nonobviousness of the claims, including:
`
` HFOs were viewed at the time of the invention as “impurities” that
`
`needed to be “removed” from HFCs. (Corr Dep. 302-303). 
`
` A person of ordinary skill in the art (“POSITA”) viewing prior art
`
`references regarding the toxicity of olefins, such as HFOs, would view
`
`the art to “suggest against” using olefins. (Corr Dep. 139). 
`
` The properties of HFOs and POE lubricants are unpredictable and the
`
`only way to understand the properties and reasonably expect success was
`
`to test the compounds. (Corr Dep. 21, 51-52). 
`
` The lack of solubility of POE lubricants with compounds disclosed in
`
`Inagaki “creates a question” for the use of POE lubricants. (Corr Dep.
`
`
`
`-2-
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`Page 9 of 66
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`

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`281-282, 286).  
`
` A POSITA could view HFOs and HFCs as “distinctly different”
`
`compounds; HFOs were “4th Generation Refrigerants” designed after the
`
`“Third generation” of refrigerants, HFCs. (Corr Dep. 177). 
`
` He “wouldn’t think it was obvious” to use 30-50% lubricant in a heat
`
`transfer medium, as required by claims 5 and 9-12. (Corr Dep. 269). 
`
` The references “do not teach” a mixture with one liquid phase at at least
`
`one temperature between -50 and +70° C as required by claims 8 and 15,
`
`and he has not “expressed an opinion” regarding the obviousness of such
`
`a mixture. (Corr Dep. 260-261). 
`
` The references do not teach the use of “all the way up to 90%” trans-
`
`HFO1234ze as required in claim 2. (Corr Dep. 249-250). 
`
` He has not “provided an opinion about whether Inagaki and Bivens teach
`
`the use of a chiller system” with the claimed compounds as required in
`
`claim 11. (Corr Dep. 259).  
`
`Finally, as also demonstrated below, Patent Owner now presents
`
`contemporaneous evidence that – outside of the context of its Petition – Petitioner
`
`itself recognizes the difference between the HFO of Patent Owner’s invention and
`
`the HFCs disclosed in the prior art.
`
`
`
`-3-
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`Page 10 of 66
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`I. Technology Background
`
` The ‘874 patent addresses shortcomings in previously known heat transfer
`
`methods, and in particular cooling methods. Before Patent Owner’s invention,
`
`commercial fluorocarbon-based methods of transferring heat to or from a body
`
`used saturated compounds (compounds containing carbon-carbon single bonds).
`
`These compounds, such as chlorofluorocarbons (“CFCs”), were safe and effective
`
`for cooling air, for example; but had high Ozone Depletion Potential (“ODP”) and
`
`high Global Warming Potential (“GWP”), and therefore were not safe for the
`
`environment. Attempts to address the environmental concerns spanned several
`
`decades — and involved a transition away from CFCs to other saturated
`
`compounds such as hydrochlorofluorocarbons (“HCFCs”) with lower ODP and
`
`hydrofluorocarbons (“HFCs’) replacements having no ODP. (Bivens Decl., Ex.
`
`2040, ¶12.) While these replacements reduced ODP, they still had high GWP. At
`
`the time of the ‘874 patent, notwithstanding a decades-long search, the industry
`
`was no closer to finding a safe, effective, and efficient composition that had the
`
`required environmental properties (of both low ODP and low GWP) as well as all
`
`the other difficult-to-achieve requirements for commercial use as a refrigerant.
`
`(Bivens Decl., Ex. 2040, ¶¶ 21, 12, 13, 15)
`
`Despite the long-felt need for a commercial solution, years went by without
`
`anyone recognizing or investigating the present invention. Before Patent Owner’s
`
`
`
`-4-
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`Page 11 of 66
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`

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`invention, the industry viewed unsaturated HFOs as too unstable, reactive, toxic,
`
`and flammable and thus routinely rejected them when investigating replacements.
`
`(Shankland Decl., Ex. 2041, ¶¶ 9-13, 15.) (Bivens Decl., Ex. 2040, ¶¶ 8, 14, 15.)
`
`II.
`
`Introduction and Overview
`
`A. Introduction to Claimed Methods, Cited Documents, and
`Arguments
`
`The claimed methods are directed to transferring heat using trans-1,3,3,3-
`
`tetrafluoropropene (“transHFO-1234ze”) and a polyol ester (“POE”) lubricant (e.g.
`
`Claim 1.) The claimed methods are neither disclosed nor suggested by a
`
`combination of Inagaki, Konzo, and Bivens. Specifically, it would not have been
`
`obvious to a person of ordinary skill in the art (“POSITA”) to select unsaturated
`
`refrigerants, let alone trans-HFO-1234ze, and combine them with a POE lubricant
`
`in a method of transferring heat with a reasonable expectation of success in view of
`
`the prior art, and in particular the cited documents.
`
`As will be demonstrated, the Petitioner’s reliance on these documents is
`
`based on unfounded and erroneous conclusions, extrapolations, and interpretations
`
`including, but not limited to, selection of transHFO-1234ze, without any proper
`
`motivation provided by Inagaki, as well as the interpretations of the undefined and
`
`unexemplified use of the lubricant “machine oil,” the undefined and unexplained
`
`use of the term “compatible,” and the unexplained use of an “oil-separator” in
`
`
`
`-5-
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`Inagaki as well as the reliance on an improperly expanded definition of the term
`
`“HFC” contrary to the definition accepted by those skilled in the art of refrigerants
`
`and the unfounded conclusions regarding the use of POE in Bivens.
`
`Inagaki, in particular, is relied on by Petitioner as disclosing transHFO-
`
`1234ze” in a heat transfer method. Inagaki does disclose fluorinated propenes
`
`having general formula C3HmFn with m and n integers between 1 and 5, and m + n
`
`= 6, which provides 30 different compounds, and among others, Inagaki
`
`exemplifies F3C-CH=CHF which is the general formula of HFO-1234ze.
`
`As for lubricant, Inagaki refers only to a machine oil in general terms. In
`
`those general terms, Inagaki suggests a machine oil in combination with mixtures
`
`of the fluorinated propenes with named, commercially available, saturated
`
`refrigerants, namely CFCs and HFCs. No specific lubricants are mentioned and
`
`certainly no POEs are even hinted at.
`
`Nothing in Konzo or Bivens fills the gaps in Inagaki’s disclosure. Konzo is
`
`relied on as disclosing use of a heat pump process in a refrigerator to support that
`
`the heat pump of Inagaki could have been used in a refrigerator. Konzo does not
`
`teach or suggest unsaturated molecules such as HFO refrigerants and does not
`
`teach or suggest POE lubricants.
`
`Petitioner relies on Bivens as disclosing the combination of HFCs with
`
`lubricants such as polyalkylene glycols (“PAGs”) and POEs. Though Bivens
`
`
`
`-6-
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`

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`generally discusses the benefits of HFCs over CFCs, and the combination of HFCs
`
`with PAGs and POEs, Bivens recognizes difficulties associated with using PAGs
`
`and POEs as lubricants because they are “extremely hygroscopic” which can lead
`
`to absorbed moisture leading to problems such as formation of acids which causes
`
`corrosion of the refrigeration system and formation of intractable sludges. Bivens
`
`foregoes solving problems with PAGs and POEs and instead works to improve the
`
`solubility of mineral oil and alkylbenzene lubricants with saturated refrigerants.
`
`Bivens’ invention focused on azeotrope-like refrigerant compositions consisting
`
`essentially of three specific saturated fluorocarbons and one saturated hydrocarbon.
`
`Bivens therefore supports the unexpected nature of utilizing even saturated
`
`molecules since it took a special combination of four saturated HFCs and one
`
`saturated hydrocarbon to arrive at suitable results.
`
`It will be demonstrated that the term “HFC” in Bivens as of the date of the
`
`Honeywell invention did not include unsaturated refrigerant compounds such as
`
`HFOs. This understanding is in fact confirmed by a named inventor of the Bivens
`
`reference himself. It will further be demonstrated that POE lubricants were not
`
`only considered undesirable for the reasons provided by Bivens, but also their
`
`effective use with refrigerants in heat transfer applications was, and still is,
`
`unpredictable. Hence it will be shown that Bivens does not provide any guidance
`
`for selecting POEs as a lubricant for the specific compound transHFO-1234ze. It
`
`
`
`-7-
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`Page 14 of 66
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`will be further demonstrated that properties such as miscibility were unpredictable
`
`and Bivens provides no guidance whether any particular HFC is miscible or
`
`otherwise “compatible” (as that term was used in Inagaki) with POE.
`
`B. Specific Board Positions for Rebuttal
`
`Although the Patent Owner does not agree with many of the positions
`
`asserted by the Petitioner, the Patent Owner will particularly focus on the
`
`following positions adopted by the Institution Decision.
`
`(1) The Institution Decision found that the terms “hydrofluorocarbons” and
`
`“HFCs,” as used in cited exhibits, including in Bivens, generically refer to
`
`hydrofluorocarbons, i.e., any compounds comprising hydrogen, fluoride and
`
`carbon, whether those compounds are saturated or unsaturated. See, e.g., Ex. 1008
`
`¶ 17 (stating that “[h]ydrofluoroolefins (HFOs) are a subset of the group of
`
`fluorocarbon fluids known as hydrofluorocarbons (HFCs), compounds that consist
`
`of hydrogen, carbon and fluorine”). Thus, the conclusions in the Institution
`
`Decision were swayed by Petitioner’s unsupported position “that one reading
`
`Bivens would have understood such teachings to relate to HFCs generally
`
`(saturated or unsaturated), not just the particular HFCs disclosed elsewhere in the
`
`reference.” Institution Decision, p. 13.
`
`It will be demonstrated that at the time of the Honeywell invention one
`
`skilled in the art would not have considered the terms “hydrofluorocarbons” and
`
`
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`-8-
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`Page 15 of 66
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`

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`“HFCs,” as it was used by Bivens, to include both saturated and unsaturated
`
`compounds. Instead, it will be demonstrated that at the time of the invention one
`
`of ordinary skill in the art did not consider HFO refrigerants to be a “subset” of
`
`HFC refrigerants. Petitioner has failed to demonstrate otherwise.
`
`(2) The Institution Decision also considers that “Mexichem reasonably
`
`contends that where Bivens teaches using polyalkylene glycols (PAGs) or polyol
`
`esters (POEs) as lubricants with HFCs generally, it also suggests using such
`
`lubricants with HFOs (a subset of HFCs), such as the C3HmFn compounds,
`
`including 1,3,3,3-tetrafluoropropene.” Institution Decision, pp. 13-14.
`
`It will be demonstrated that Bivens teaches away from using PAGs or POEs
`
`as lubricants with HFCs. Further, it will be demonstrated that one of ordinary skill
`
`in the art would have found no hint of any suggestion in Bivens that HFOs are a
`
`subset of HFCs and that PAGs and POEs can be combined with HFOs.
`
`(3) The Institution Decision states that “the absence or presence of the
`
`recited HFO and POE lubricant in at least some amounts was known to be a result-
`
`effective variable in relation to the function of a refrigerant. A question remains
`
`whether, based on information presented at this stage of the proceeding, the recited
`
`weight percentages of HFO and/or POE lubricant are 'critical,' i.e., provide a new
`
`and unexpected result that differs 'in kind and not merely in degree from the results
`
`
`
`-9-
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`Page 16 of 66
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`

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`of the prior art.' Pet. 34-35; In re Aller, 220 F.2d at 456.” Institution Decision, p.
`
`16.
`
`It will be demonstrated that selection of any unsaturated refrigerants, let
`
`alone HFO-1234ze or specifically transHFO-1234ze, for combination with a POE
`
`is not based on the unsaturated molecules being a result effective variable in
`
`relation to the function of a refrigerant. That is, it will be demonstrated that
`
`unsaturated refrigerants, namely HFOs, were considered to be reactive, unstable,
`
`toxic, and flammable by those of ordinary skill in the art and the result of using
`
`such HFOs were thought to be unwise and possibly dangerous. Likewise, as
`
`confirmed in Bivens, POEs were considered to be reactive and unstable resulting
`
`in, for example, sludge buildup in heat transfer equipment. Finally it will be
`
`demonstrated that whether combinations of refrigerants and lubricants were
`
`effective as heat transfer fluids was unpredictable. Hence it will be demonstrated
`
`that one of ordinary skill in the art would not have expected HFOs, and specifically
`
`transHFO-1234ze, and POEs to be an effective, stable combination, and selection
`
`thereof is not simply a result effective variable.
`
`(4) The Institution Decision also considers
`
`that “Inagaki
`
`teaches
`
`'compatibility with lubricants,' which conveys reasonably 'a degree of miscibility,'
`
`as recited in the claims. Pet. 41 (citing Ex. 1003, 3-4).” Institution Decision, p. 18.
`
`
`
`-10-
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`Page 17 of 66
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`

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`It will be demonstrated
`
`that
`
`Inagaki does not define
`
`the
`
`term
`
`“compatibility,” that Inagaki does not even mention the term “miscibility”
`
`anywhere, and that POSITA at the time of Honeywell’s invention understood that
`
`“compatibility” meant something other than “miscibility.” It will be demonstrated
`
`that Inagaki utilizes an “oil-separator” which conveys to a person of ordinary skill
`
`in the art (POSITA) that the refrigerant and lubricant were indeed most likely
`
`immiscible. It will further be demonstrated that miscibility cannot be predicted
`
`between any refrigerant, especially a refrigerant having double bonds, and any
`
`lubricant. Thus it will be shown that Inagaki does not reasonably convey to
`
`POSITA that “compatibility with lubricants” means “a degree of miscibility in
`
`general,” much less any particular degree of miscibility.
`
`III. Petitioner’s Burden of Proof
`
`
`
`“[T]he petitioner shall have the burden of proving a proposition of
`
`unpatentability by a preponderance of the evidence.” 35 U.S.C. §316(e). To prove
`
`unpatentability, the Petitioner is required to file a petition that must identify with
`
`particularity: 1) the statutory grounds on which the challenge to each claim is
`
`based, and 2) evidence that supports the grounds for the challenge to each claim,
`
`including “such other information as the Director may require by regulation.”
`
`35 U.S.C. § 312(a)(4).
`
`
`
`-11-
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`Page 18 of 66
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`

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`
`
`Consistent with these statutory requirements, Rule 42.104(b) requires that
`
`the petition must: 1) “specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon”; and 2) provide “the relevance of
`
`the evidence to the challenge raised.”
`
`
`
`As detailed below, Petitioner, in its petition, has failed to carry its burden,
`
`and its Petition is deficient under Rule 42.104(b) in many respects. The failure of
`
`Inagaki, Konzo, and Bivens to render obvious any of claims 1-15 is affirmatively
`
`demonstrated herein.
`
`IV. Claim Construction
`
`A.
`
`The claims are to be given their broadest reasonable interpretation in light of
`
`the specification. 37 C.F.R. §42.100(b). Under this standard:
`
` The Patent and Trademark Office (“PTO”) determines the scope of
`claims in patent applications not solely on the basis of the claim
`language, but upon giving claims
`their broadest
`reasonable
`construction “in light of the specification as it would be interpreted by
`one of ordinary skill in the art.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citation omitted).
`
`The broadest reasonable interpretation of the claims must also be
`consistent with the interpretation that those skilled in the art would
`reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468
`(Fed. Cir. 1999). . . . [T]he focus of the inquiry regarding the meaning
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`of a claim should be what would be reasonable from the perspective
`of one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d
`1255, 1260 (Fed. Cir. 2010); In re Buszard, 504 F.3d 1364 (Fed. Cir.
`2007).
`
`Manual of Patent Examining Procedure (MPEP) § 2111.
`
`1.
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`“Trans-1,3,3,3-tetrafluoropropene”
`
`
`
`Patent Owner agrees that all challenged independent claims recite methods
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`comprising providing a heat transfer composition or fluid comprising “trans-
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`1,3,3,3-tetrafluoropropene.” Patent Owner accepts the Institution Decision (p. 7.)
`
`that
`
`“trans-1,3,3,3-tetrafluoropropene”
`
`encompasses
`
`“trans-1,1,1,3-
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`tetrafluoropropene,”
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`“trans-1,3,3,3-tetrafluoro-1-propene,”
`
`and
`
`“trans-HFO-
`
`1234ze.”
`
`
`
`Patent Owner does not agree with Petitioner that the terms “HFC-1234ze” or
`
`“trans-HFC-1234ze” are different nomenclature
`
`to describe unsaturated
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`fluorocarbons such as trans-1,3,3,3-tetrafluoropropene. (Bivens Decl., Ex. 2040,
`
`¶¶ 16–20) (Shankland Decl., Ex. 2041, ¶¶ 7-8). The designations “HFC” and
`
`“HFO” were considered by POSITA to have separate and distinct meanings
`
`(Shankland Decl., Ex. 2041, ¶ 14) (Bivens Decl., Ex. 2040, ¶ 16). Thus POSITA
`
`would not have referred to trans-1,3,3,3-tetrafluoropropene as HFC-1234ze or
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`trans-HFC-1234ze. Nothing in any of the documents cited by Petitioner suggests
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`that HFC, as understood by POSITA, meant anything other than saturated
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`refrigerants that were commonly utilized in industry at the time Bivens was filed.
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`Notably, Petitioner’s own scientists recognized the distinction between
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`HFCs and HFOs. See Bivens Declaration, ¶ 17, pointing to Petitioner’s
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`(Petitioner’s) scientists’ white paper (Ex. 2005) published on Petitioner’s website
`
`which undeniably confirms this distinction. The white paper discusses the moves
`
`to obtain alternative partially fluorinated molecules, in particular “candidates from
`
`the group of Hydrofluoroolefins (HFOs) …” on page 1 and “most of the potential
`
`alternatives to HFC 134a that are actively being looked at as potential industrial
`
`refrigerants belong to the class of hydrofluoroolefins (HFOs)” on page 5. The
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`white paper further distinguishes HFOs from the “simpler HFCs” page 5. This
`
`white paper makes a clear distinction between HFCs and HFOs and at no point
`
`even hints that HFOs are a subset of HFCs. In fact, on page 3, the white page
`
`refers to “Hydrofluoroalkane (HFC)” substantiating the position that HFCs were
`
`considered to be saturated compounds. The posited grouping of HFOs as a subset
`
`of HFCs is a direct consequence of a hindsight-induced consideration of the prior
`
`art aimed solely at concocting a patentability challenge.
`
`In ¶ 18 of his Declaration (Ex. 2040), Dr. Bivens further points to a fact
`
`sheet (Ex. 2009) by the industry group EFCTC stating “HFOs contain hydrogen,
`
`fluorine and carbon like the HFCs, but they are distinctly different” and in ¶ 19,
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`-14-
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`Page 21 of 66
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`Dr. Bivens identifies the EFCTC website which lists HFCs and HFOs as separate
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`families of fluorinated materials.
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`The belief and understanding by POSITA therefore were that HFOs were
`
`distinct from HFCs and certainly not a subset of HFCs. Petitioner has provided no
`
`evidence that disputes such belief and understanding and in fact, Petitioner’s own
`
`scientists confirm Patent Owner’s position. At the time of Honeywell’s invention,
`
`POSITA would not have identified the unsaturated HFO compound trans-1,3,3,3-
`
`tetrafluoropropene as HFC-1234ze or trans-HFC-1234ze.
`
`V. Combination of Inagaki, Konzo, and Bivens
`
`A. Legal Standard for Obviousness
`
`Obviousness under 35 U.S.C. § 103(a) involves four factual inquiries: (1)
`
`the scope and content of the prior art; (2) the differences between the claims and
`
`the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary
`
`considerations of non-obviousness, if any.1 Graham v. John Deere Co., 383 U.S.
`
`1 Patent Owner objects to the admissibility of the Declaration and testimony of
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`Petitioner’s expert, Dr. Stuart Corr, on the grounds that he used an improperly high
`
`level of ordinary skill in the art when rendering his opinions in his Declaration and
`
`his deposition testimony. Patent Owner has provided objections to Petitioner.
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`Patent Owner intends to file a Motion to Exclude the Corr Declaration and
`
`
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`1, 148 U.S.P.Q 459 (1966). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`82 U.S.P.Q. 1385 (2007). “[R]ejections on obviousness grounds cannot be
`
`sustained by mere conclusory statements; instead, there must be some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness.” KSR, 127 S.Ct. at 1741 (quoting In re Kahn, 441 F.3d 977, 988, 78
`
`U.S.P.Q.2d 1329, 1336 (Fed. Cir. 2006)). An invention “is not proved obvious
`
`merely by demonstrating that each of its elements was, independently, known in
`
`the prior art.” Id. at 1741; see also In re Rouffet, 149 F.3d 1350, 1357, 47 U.S.P.Q.
`
`2d 1453 (Fed. Cir. 1998). The fact finder must be aware of the distortion caused
`
`by hindsight bias and to be cautious of arguments reliant on ex post reasoning.
`
`KSR, 127 S.Ct. at 1742. Thus, to establish a prima facie case of obviousness, it is
`
`necessary for the Examiner to identify each claim element in the prior art, the
`
`reasons why a person of ordinary skill in the art would have combined the prior art
`
`elements in the manner claimed, and why they would have a reasonable
`
`expectation of success. See, Sanofi-Aventis Deutschland GMBH, et al. v.
`
`Glenmark Pharmaceuticals Inc., USA, et al., --- F.3d ---, 2014 WL 1552167 (Fed.
`
`Cir. 2014) (invention not obvious or “obvious to try” where known “double-ring”
`
`
`testimony, as appropriate, at the time for such motions provided by the Patent Trial
`
`and Appeal Board.
`
`
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`inhibitor substituted in two-component combination in place of “single-ring”
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`inhibitor and POSITA was taught away from use of “double-ring” inhibitors by
`
`belief that “double ring” inhibitors would not “fit in the pocket” of an enzyme as
`
`effectively as “single ring” inhibitors).
`
`The level of education and training of a person of ordinary skill in the
`
`refrigerant/heat transfer field of the ‘874 patent is a Bachelor of Science degree in
`
`a specialty technical area (such as Chemical Engineering, Mechanical Engineering,
`
`or Chemistry) and several years of work experience in developing/testing
`
`refrigerants and lubricants for heat transfer compositions. (Bivens Decl., Ex. 2040,
`
`¶ 11) The claims of the ‘874 patent would not have been obvious to a person of
`
`ordinary skill in the art or even to a person of more significant skill in the art.
`
`B. Overview
`
`It would not have been obvious to POSITA to combine trans-1,3,3,3-
`
`tetrafluoropropene (trans-HFO-1234ze) with a POE lubricant in a method of
`
`transferring heat with a reasonable expectation of success. None of Inagaki,
`
`Konzo, and Bivens, taken alone or in combination, teaches or suggests the issued
`
`claims.
`
`
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`C.
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`Facial Deficiencies of Cited Documents as to Claims
`
`1.
`
`Inagaki
`
`
`
`Inagaki discloses C3HmFn containing one double bond, m and n are
`
`independently 1-5, and m+n is equal to 6; hence Inagaki discloses 30 possible
`
`unsaturated compounds. (Ex. 1003, MXC-000028.) Inagaki exemplifies five
`
`“typical” compounds (E